Can artificial intelligence be an inventor under patent law? Australian Federal Court Says “Yes”, But US District Judge Says “No” – Intellectual Property
Malaysia: Can artificial intelligence be an inventor under patent law? Australian Federal Court Says “Yes”, But US District Judge Says “No”
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On August 18, 2021, we posted a comment on
Thaler v Commissioner of Patents FC 879 (“the Australian case“) where the Federal Court of Australia has held that an artificial intelligence (“AI“) the system may be named as an inventor in a patent application under the Patents Act 1990 (“Australian Patent Law“). Our commentary on the Australian case is available here.
On September 2, 2021, United States District Judge Leonie Brinkema issued an opinion on a memorandum in Stephen Thaler vs. Andrew Hirshfeld, et al (Case 1: 20-cv-09 (LMB / TCB)) (“the american case“) in which she held that an AI system cannot be an inventor under the United States Patent Act (35 USC) (“U.S. Patent Law“).
We will now discuss the ruling in the United States case.
The US case involved the same plaintiff and the AI as the Australian case namely Dr Stephen Thaler and the AI known as DABUS. Dr. Thaler has also filed an application with the United States Patent and Trademark Office (“USPTO“) to patent two inventions: a light beacon that flashes in a new and inventive way to attract attention and a beverage container based on fractal geometry.
DABUS is identified as the inventor in patent applications. US patent law requires an inventor to take an oath or make a statement, and because DABUS could not do so, Dr. Thaler included in his application a “surrogate statement” which explained that DABUS was “incapable of doing so. legal ”since it is an AI without legal personality or the capacity to take an oath.
The USPTO has not accepted that DABUS can be named an inventor under US patent law. Dr. Thaler then filed an administrative review action challenging the USPTO’s decision in the United States case.
The decision in the American case
The district court concluded that an artificial intelligence machine cannot be an inventor based on the clear statutory language of US patent law and did not accept Dr. Thaler’s arguments that political considerations should prevail over clear statutory language.
The definition of an “inventor” in US patent law specifically refers to the word “individual” as follows: “each natural person who is the inventor or a co-inventor signs an oath or declaration …“. Thus, the district court proceeded with the interpretation of the meaning of the word” individual “and concluded that the ordinary meaning of an” individual “is” a natural person. “The district court also referred to Univ. by Utah vs. Max-Planck Gesellschaft 734 F.3d 1315, 1323 and
Beech Aircraft Corp v Edo Corp 990 F.2d 1237, 1248 where the Federal Circuit ruled that inventors must be natural persons.
Dr Thaler tried to persuade the district court that the US patent law’s reference to inventors as “individuals” was not made in the context of AI-generated inventions and that political considerations such as Encouragement of innovation should be taken into account when interpreting US patent law. . The district court was unconvinced and took the position that matters of policy are for Congress and cannot overcome the plain language of a law.
The reason for the difference between the decision in the Australian case and the US case is the language difference between the patent laws of Australia and the United States. US patent law contains straightforward statutory language requiring an inventor to be a natural person, unlike Australian patent law, and this allowed Judge Beach to venture further into the exercise of a purposive statutory interpretation in the Australian case.
As noted in our commentary on the Australian case, Malaysian patent law is more like US patent law in that it contains plain language that sees the inventor as a human being capable of signing a declaration. in writing.
In summary, it would appear that the question of whether an AI can be an inventor under patent law will depend on the specific language in the patent statute of each jurisdiction. In jurisdictions where there is clear legislative language requiring an inventor to be a natural person, it is likely that legislative changes will be required to explicitly incorporate and recognize AI-generated inventions. On the other hand, in jurisdictions like Australia where the legislative language is less clear, the courts may have more latitude to consider the interpretation of laws according to their subject matter and political considerations.
It has been reported that Dr Thaler will appeal the decision of the district court.1
1. A US judge rejects the patent offer of an AI “inventor”, The sunday star, September 5, 2021.
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